Brief Summary

Patents — Novelty — Comparison of claims in conflicting patent applications — Appellants challenged the validity of the Deton patent on the grounds of lack of novelty, relying on the earlier CMI patent, which disclosed similar inventions but was not publicly available until after the Deton priority date — The court held that the novelty of the Deton patent was not destroyed by the CMI patent as the relevant comparison must be made between the claims of the patents, not merely their descriptions — The "whole contents" approach was deemed more appropriate for assessing novelty, thereby affirming the validity of the Deton patent.

Comprehensive Summary

Summary of Judgment

1. Introduction

This was an appeal to the Supreme Court of Appeal from a decision of the Commissioner of Patents (Van Dijkhorst J). The appeal arose in infringement proceedings in which the court below had granted an interdict restraining the third appellant from infringing certain claims of a South African patent owned by the first respondent.

The appellants were John Paul McKelvey, New Concept Mining (Pty) Ltd, and Ceramic Linings (Pty) Ltd. The respondents were Deton Engineering (Pty) Ltd (the patent proprietor in the infringement proceedings) and Chemical, Mining and Industrial Services (Pty) Ltd (“CMI”), the proprietor of an earlier patent relied upon as prior art.

The dispute concerned the effect of an earlier patent application (not yet open to public inspection at the priority date of the later patent) on the novelty of the later patent’s claims. In particular, the appeal turned on the correct interpretation of section 25(7) of the Patents Act 57 of 1978, and whether it adopts a “whole contents” approach (earlier disclosure anticipates) or a “prior claim” approach (only earlier claims anticipate).

Although the proceedings were framed as infringement litigation, the decisive issue on appeal was the validity (novelty) of several claims of the Deton patent in light of matter disclosed in the earlier CMI patent application.

2. Material Facts

The Deton patent (South African patent application number ZA 90/5999) and the CMI patent (ZA 89/4136) both related to methods of producing wear-resistant inner linings for pipes. The court treated the overlap between the subject matter of the two specifications as central to the novelty enquiry.

It was undisputed that the invention claimed in claims 1, 2, 4, 5 and 7 of the Deton patent was disclosed in the body of the CMI patent specification. It was also undisputed that the priority date of the CMI application preceded the priority date of the Deton application.

It was further common cause that, although CMI’s priority date was earlier, the CMI application became open to public inspection only after the Deton priority date. Accordingly, the information in the CMI specification was not publicly accessible at the time relevant to novelty under section 25(6), unless the extended definition in section 25(7) applied.

The court below had granted an interdict against the third appellant based on infringement of the Deton patent, and the sole defence persisted in was that the relevant Deton claims lacked novelty because of the earlier CMI application.

3. Legal Issues

The central legal question was one of statutory interpretation and its application to agreed facts: whether section 25(7) of the Patents Act 57 of 1978 requires a comparison between (i) the claims of the earlier patent application and the later patent (prior claim approach), or (ii) the whole disclosure (“matter”) contained in the earlier application and the later patent’s claims (whole contents approach), even where the earlier application was not yet open to public inspection at the later priority date.

Closely connected to that were questions about the meaning of “matter” in section 25(7), and how to determine “the priority date of that matter” for purposes of section 25(7)(b), particularly in light of provisions dealing with priority dates of claims (including section 33).

A further issue (arising from the consequences of partial invalidity) concerned whether an interdict for infringement could be granted where a patent had both valid and invalid claims, given the Commissioner of Patents’ view (accepted by counsel on appeal) that relief should not be granted unless and until invalidity had been cured by amendment.

Overall, the dispute primarily concerned law (the meaning and effect of section 25(7)), applied to agreed facts (the disclosure and timing of the two patent applications), with a consequential remedial question about the availability of injunctive relief.

4. Court’s Reasoning

The Supreme Court of Appeal located the dispute within a broader policy and comparative-law context, noting that patent applications typically become open to public inspection only after a period (generally 18 months), which creates the possibility of later filings that conflict with earlier unpublished applications. The judgment contrasted the prior claim and whole contents approaches discussed in the Banks Report, observing that the two systems rest on different rationales: the prior claim approach focuses on avoiding duplication of monopoly as defined by claims, whereas the whole contents approach also prevents patents being granted for subject matter already disclosed in an earlier application, even if that disclosure was not public at the later priority date.

Turning to South African law, the court emphasised the statutory language of section 25(7). Unlike repealed provisions in earlier South African statutes (which explicitly directed the enquiry to what was “claimed” in prior specifications), the current section 25(7) speaks of “matter contained in an application, open to public inspection, for a patent” and does not confine the enquiry to the earlier application’s claims. This textual shift was treated as significant in deciding that the legislature did not simply replicate the older “prior claiming” model.

The court rejected the Commissioner’s starting premise that the object of section 25(7) was solely to prevent double patenting. It reasoned that section 25(7), like section 25(8), functions more generally to extend the “state of the art” beyond what had been “made available to the public” under section 25(6). On this view, section 25(7) is an enlarging provision for novelty purposes, and its double-patenting consequences are incidental and depend on circumstances rather than constituting the exclusive rationale.

A central step in the court’s reasoning was its interpretation of “matter”. It drew a distinction between “matter” and the “claimed invention”, explaining that “matter” refers broadly to the disclosure in the body of a specification capable of supporting claims, whether or not it has been claimed. The court illustrated why equating “matter” with “claimed invention” would be incorrect: a specification may disclose multiple inventions while only claiming some of them, and later amendments could alter the scope of the claims. If only earlier claims counted as prior art under section 25(7), the result could be two valid patents claiming the same subject matter, or even strategic “double patenting” by the same inventor to extend monopoly—an outcome the court regarded as unacceptable.

The Commissioner’s reasoning had relied heavily on the idea that only claimed matter can have a priority date, referencing the statutory treatment of priority dates in section 33. The Supreme Court of Appeal analysed the structure of the Act’s priority-date provisions and held that, although section 1 defines “priority date” in relation to claims, this did not entail that unclaimed “matter” lacks a priority date for purposes of section 25(7). The court considered that the priority date of matter could be derived, at least broadly, from provisions such as section 31, and that claims generally take the priority date of the supporting disclosure—but this relationship does not mean that disclosure has no priority date unless and until claimed.

The court then addressed the amendment introduced by the Patent Amendment Act 67 of 1983 to section 33(1)(b) (stating that the priority date of matter in a complete specification is the same as that of the earliest claim in which it has been included, subject to a proviso for supplementary disclosure amendments). It held that section 33(1)(b) does not resolve the present dispute because it deals with the priority date of matter in a complete specification rather than the priority date of unclaimed matter in an earlier application as contemplated by section 25(7). The court further observed that the Commissioner’s view was inconsistent with aspects of section 33(1)(b), including its proviso, and also rejected the notion that priority dates are about the commencement of protection, noting that protection runs from publication of acceptance (section 44(3)).

Applying the approach to statutory interpretation articulated in Jaga v Dönges NO and Another 1950 (4) SA 653 (A), the court stressed that meaning must be determined in context, including the statute’s scope, purpose, and background. It concluded that the shift from the prior legislation to the 1978 Act represented a change in legislative direction consistent with the whole contents approach.

On the agreed facts, because the matter disclosed in the body of the earlier CMI application (with an earlier priority date) included the inventions claimed in Deton’s claims 1, 2, 4, 5 and 7, those Deton claims lacked novelty under section 25(5) read with section 25(7). The court therefore held those claims invalid.

The judgment then dealt with the practical consequence for the interdict. Infringement of other Deton claims (not affected by the novelty finding) was said not to be disputed. However, the judgment noted that the Commissioner had held (in related proceedings involving CMI’s own interdict application) that the Commissioner of Patents is not empowered to grant relief in infringement proceedings where one or more claims are invalid unless and until the defect is rectified by proper amendment. On appeal, counsel for Deton accepted the correctness of that finding and did not attack it. In light of this, and the invalidity of some of Deton’s claims, the interdict could not stand.

5. Outcome and Relief

The appeal was upheld. The Supreme Court of Appeal set aside the interdict previously granted in favour of Deton Engineering (Pty) Ltd and substituted an order refusing the application for an interim interdict or interdict in case number 90/5999.

The court also altered the costs order made by the court below in the respects identified in the order of the Supreme Court of Appeal. The appeal costs, including the costs of two counsel, were ordered to be borne by the first respondent (Deton Engineering (Pty) Ltd) only. The substituted costs order in the court a quo (as reflected in the substituted paragraphs) required the applicants to pay, jointly and severally, the costs of the respondents in the relevant respects.

Cases Cited

Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A)

Fundstrust (Pty) Ltd In Liquidation) v Van Deventer 1997 (1) SA 710 (A)

Mitsui Petrochemical Industries v Solvay et Cie 1974 BP 24 (C of P)

Beecham Group Ltd v The B-M Group (Pty) Ltd 1977 BP 14 (C of P)

The B-M Group (Pty) Ltd v Beecham Group Ltd 1978 BP 373 (T)

B-M Group (Pty) Ltd v Beecham Group Ltd 1980 (4) SA 536 (A)

Jaga v Dönges NO and Another 1950 (4) SA 653 (A)

Legislation Cited

Patents Act 57 of 1978 (in particular sections 1, 25(5)–(8), 30, 31, 32, 33, 42, 43, 44, 51, 55, 61)

Patent Amendment Act 67 of 1983

Patents Act 37 of 1952

Patents, Designs, Trade Marks and Copyright Act 9 of 1916

Rules of Court Cited

No rules of court were cited in the judgment.

Held

The Supreme Court of Appeal held that section 25(7) of the Patents Act 57 of 1978 adopts the whole contents approach for novelty purposes. Accordingly, “matter” disclosed in an earlier patent application (with an earlier priority date), even if only opened to public inspection after the later patent’s priority date, forms part of the state of the art for assessing novelty under section 25(5).

On the agreed facts, the matter disclosed in the body of the earlier CMI patent specification anticipated the inventions claimed in Deton’s claims 1, 2, 4, 5 and 7, with the result that those claims were invalid for lack of novelty. In consequence, the interdict granted by the Commissioner of Patents could not be sustained and was refused on appeal, with attendant substituted costs orders.

LEGAL PRINCIPLES

Section 25(7) of the Patents Act 57 of 1978 extends the “state of the art” for novelty purposes beyond publicly available matter under section 25(6), by including matter contained in an earlier patent application that later becomes open to public inspection, provided the matter was contained both as lodged and as opened, and has an earlier priority date than the later claim.

For purposes of section 25(7), “matter” is not confined to what is claimed in the earlier specification. It refers to the disclosure capable of supporting claims, whether or not claims were actually framed for that disclosure. Treating “matter” as synonymous with “claimed invention” is inconsistent with the statutory scheme and can permit unacceptable forms of double patenting.

The concept of a “priority date” in the Act is not limited to claimed subject matter in a way that would deprive unclaimed disclosed matter of a relevant priority date for purposes of section 25(7). Provisions dealing with priority dates of claims (including section 33) do not negate section 25(7)’s assumption that “matter” can have a priority date.

Statutory interpretation in this context requires attention to language, context, purpose, and legislative background, consistent with the approach in Jaga v Dönges NO and Another 1950 (4) SA 653 (A).

McKelvey and Others v Deton Engineering (Pty) Ltd and Another (657/95) [1997] ZASCA 57; 1998 (1) SA 374 (SCA); [1997] 3 All SA 569 (A); (28 May 1997)